The Chilean economy regained much of its stability in 2018 and is forecast to remain strong over the next two years. In the IP arena, practitioners have reason to be optimistic with a new bill modifying the country’s industrial property laws making it to Congress. Some of the bill’s most noteworthy highlights are that it will allow for provisional patent applications, modify term adjustments and extension requests from six months to 60 working days and reduce the deadline to request the reinstatement of patent applications from 120 working days to 60. In addition, the Patent Prosecution Highway (PPH) between the Chilean Patent Office (INAPI) and the USPTO came into effect on 1 November 2018, which should significantly expedite patent processing time. INAPI has also signed PPH pilot programme agreements with patent offices in Canada, Japan and China to further boost its already growing innovation scene.
- Sargent & Krahn
- Albagli Zaliasnik SpA
- Johansson & Langlois
- Villaseca Abogados
- Baker McKenzie
- Beuchat, Barros & Pfenniger
- Clarke Modet & Co
- Claro y Cia
- Porzio Rios Garcia
Albagli Zaliasnik SpA
“A hard hitter in patent infringement disputes”, full-service outfit Albagli Zaliasnik fights the corner of generic drug manufacturers with gusto. “One of the best IP litigators in Chile”, Ariela Agosin takes the lead on many cases. “She is knowledgeable, responsible and a thorough lawyer with fantastic trial experience. She knows how to finesse complex cases at the Supreme Court and prevails more often than not.” She and Eugenio Gormáz make a strong pairing. “Eugenio’s knowledge of pharmaceutical regulations and the Chilean patent system is on point. He is also the go-to for filing matters; he knows how to overcome examiner objections, and provides well-rounded and detailed advice in language that everyone can understand and in a short turnaround.” The outfit’s prosecution offering has been blossoming under his care and is now catching the eye of several local players in the mining industry.
Driven by innovation and taking the time to appreciate the inner workings of its clients’ creations, Alessandri places emphasis on the quality of its work rather than pumping out sheer volumes of it. Crack litigator Rodrigo Velasco Alessandri and all-rounder Francesca Rodríguez Spinelli join forces to fight battles on behalf of big names in the pharmaceutical and mining sectors. The dynamic duo continues to design enforcement strategies for Bayer in its dispute against Laboratorios Recalcine and is representing CODELCO in cancellation proceedings at INAPI. Although Velasco Alessandri’s main focus is trademarks, the IP division captain’s expertise is broad, enabling the “tremendous lawyer” to always provide the right support to his clients. Senior associate Rodríguez Spinelli receives warm plaudits from clients for her deft handling of litigation and prosecution instructions: “Francesca makes understanding long and complex processes easy – she is attentive and keeps us informed of the next steps.” “She is responsible, always available to answer questions in a pedagogic way and super nice,” enthuses another satisfied patron. She has also been working closely with director of innovation and business Jaime Silva Barros to get rights on the register for Comberplast, a loyal client that has been with them from ideation stage. Joining him in the non-contentious sphere is Santiago Ortúzar, who breaks into the IAM Patent 1000 this year on a wave of praise. “Santiago is insightful, knowledgeable and gets patents granted in record time. He has the most impressive intuition, gets to grips with the key issues and overcomes them to achieve his clients’ commercial goals.”
International player Baker McKenzie is a smart choice for global entities looking to obtain patent protection in Latin America. The contingent draws on additional support from the organisation’s sprawling cross-border support package and its tenure on the market brings with it a deep knowledge of local policies. The unit is also buttressed by its robust M&A and tax departments, making it perfectly positioned to assist in IP-rich deals. For prospective clients, Valentina Venturelli is the best first port of call.
Beuchat, Barros & Pfenniger
The “terrific and well recognised practitioners” at nimble boutique Beuchat, Barros & Pfenniger operate like a well-oiled machine. The technically astute team works together swiftly and efficiently to deliver a stream of high-quality applications on behalf of its loyal following in the chemical and mechanical industries. Andrés Melossi Jiménez garners glowing notices for his work across the contentious/non-contentious divide: “He is my first choice in Chile for his outstanding knowledge on all aspects of intellectual property.”
Winner of the Chilean IP Firm of the Year at the inaugural Global IP Awards, Carey maintains its status as “a premier law firm in Latin America”. “It has a cutting-edge patent practice, a first-rate team and a modern approach to the law, which you can see in the advice it gives to clients – it is a real competitor.” Practice co-heads Guillermo Carey and Francisco Carey are key to the squad’s success. Guillermo is frequently name-checked by his peers for his “amazing cross-disciplinary work”. Not only a “superb litigator” but also a technology transfer guru, he has doled out shrewd counsel to sizeable technology companies as well as the government in this arena. “They make up a strong team; Francisco is an extremely motivated and experienced attorney. He puts his money where his mouth is and gets things done. He knows the ins and outs of the law very well and has a practical outlook when commercialising assets.” Completing the set is counsel Fernando García, “a highly reputed professional with immeasurable IP experience”. He often finds himself representing leading pharmaceutical giants Novartis and GlaxoSmithKline.
Clarke Modet & Co
The Santiago branch of Clarke Modet & Co is supported by 25 outposts across nine other countries, making it a compelling choice for cross-border prosecution instructions, but also packs a mean punch in enforcement proceedings. With a slew of lawyers, chemists and engineers on deck, it safely and assuredly guides clients through uncharted waters. Portfolio management superstar Mercedes Londoño is a key contact for the address book.
Claro y Cia
“Venerable firm Claro y Cia retains the trust of a long list of multinational entities and is held in the highest esteem by its peers.” Running the gamut of patent protection services, the exclusive Lex Mundi firm in Chile is ideally situated to assist local players looking to branch out and to advise foreign entities on the intricacies of local laws. Clients of all stripes flock to instruct Felipe Claro, a versatile practitioner who captains the IP group. Singled out by peers for his contribution to the legal landscape, Claro has served as president on both the internet and patent committees at the Inter-American Association of Intellectual Property.
Johansson & Langlois
The offering at boutique firm Johansson & Langlois is comprehensive, personalised and revolutionised by modern technology. The unit distinguishes itself for its prosecution abilities in the chemical, electrical and mechanical theatres. The firm has recently started focusing more intensively on R&D, which has turned the heads of several players in the non-commercial research sector. Managing partner Felipe Langlois leads his troops with verve. Serving as the director of the Chilean Association of Intellectual Property for almost 10 years, Langlois knows the lay of the land and navigates his clients through its pitfalls. At his side, design engineer Marcela Ramírez deploys her years of experience as an examiner at INAPI to draft immaculate applications.
Porzio Rios Garcia
The highly reputed Porzio Rios Garcia brings a wall-to-wall patent protection service to the table. Its lawyers are supported by a “vastly experienced technical team” across the life sciences, and dive into the nitty gritty of each courtroom matter, to dazzling effect. The outfit is home to Chilean IP legend and luminary Marino Porzio. The founding partner has previously acted as deputy general director of WIPO; he deftly applies the unique insights gained in the role to his trade.
Sargent & Krahn
“Sargent & Krahn is the best of the best in Chile.” Celebrating its 130th birthday in 2019, the powerhouse “has built up a strong international presence and an impressive patent team that is dedicated to getting rights registered and fights tooth and nail to protect them”. Its lawyers and scientists work together to provide seamless guidance in the software, biotechnology and pharmaceutical spheres. A big name in the latter is Juan Pablo Egaña, who dispenses judicious counsel across the patent lifecycle. “Egaña is one of Chile’s finest, everybody knows who he is. He is experienced, client facing and an excellent attorney with a proactive and positive approach. Juan Pablo looks at matters from different angles and always comes up with fresh solutions. It is easy to work alongside or even against him; he is simply the lawyer of the year.” The “super bright” Cristian Barros is the team’s mainstay litigator and a safe pair of hands in bet-the-farm cases.
“If you want a trusted ally for your patent matters, Silva is the go-to firm in Chile.” Although it is one of the top filers in the country, the outfit is more than just a prosecution shop. The tech-savvy crew makes full use of SilvaNet, the firm’s proprietary software which automates much of the administrative workload to ensure its clientele gets maximum face-to-face time. This commitment to innovation has attracted a vast majority of local universities, which turn to the “attentive, professional, well organised and deeply knowledgeable experts” for holistic support. Leading the side is patent director Sebastian Alvarado. The Stanford law, science and technology graduate “is really devoted to his clients and immerses himself in the cases he handles. You don’t see a lawyer like him often”, beams one peer. “Rodrigo León is a unique combination of academia, practice and experience. He has proven to be effective and convincing before the courts, maintaining his clients’ interests at the forefront. Rodrigo also prosecutes patents impeccably and brings new ideas and thoughtful legal strategies to the table. He is an asset in technology transfers thanks to his significant expertise in private and contractual law.” Alvarado and León are truly a force to be reckoned with – as testament to this, the pair have recently come together to assist Universidad San Sebastian in its life sciences applications and lent a hand in commercialising Antofagasta Minerals’ assets. Resident regulatory expert Francisco Silva is a portfolio management superstar for pharmaceutical companies and recently took the lead on prosecuting Grunenthal’s patents across Latin America.
“Villaseca Abogados provides solid all-encompassing IP protection and always has its clients’ best interests at heart. Its professionals are well prepared and consistently provide clear, complete and timely advice.” Propelling the team forward are non-contentious artistes Eduardo Molina and Loreto Vera. In the words of one patron: “I would recommend Molina without hesitation. He navigates through thorny issues easily and gets straight to the point, and his involvement was key to our success.” He recently flexed his muscles when overturning a rejection on behalf of Rokum at INAPI, but is also quite the savvy litigator. Molina heads up the patent division while Vera takes charge of the innovation department. The “skilled” engineer is a staunch protector of plant variety rights. She leverages two decades of experience to sew up impenetrable protection strategies for universities and has mastered the art of IP value creation. The outfit would not be where it is today without dynamic luminary and former president of the Inter-American Association of Intellectual Property Sergio Amenábar.
Other recommended expertsMaking his IAM Patent 1000 debut, Juan Alberto Diaz Wiechers “is one of the world’s leading practitioners and academics on plant varieties”. The seasoned lawyer has taken both domestic and foreign companies under his wing and operates out of his namesake firm Diaz Wiechers. Flying the flag of Jarry IP is commercial engineer Allan Jarry. As the former chairman of the Chilean chapter of the Licensing Executives Society, the R&D specialist has asset transfers down to a T. An entrepreneurial spirit himself, Juan Francisco Reyes channels his energy into helping innovators and start-ups get off the ground. “Entrepreneurs feel comfortable around him; Juan understands their concerns and gets on their level. He’s always coming up with novel solutions.” The all-rounder plies his trade at SCR Abogados.
- Ariela Agosin - Albagli Zaliasnik SpA
- Francisco Carey - Carey
- Guillermo Carey - Carey
- Felipe Claro - Claro y Cia
- Juan Pablo Egaña - Sargent & Krahn
- Felipe Langlois - Johansson & Langlois
- Rodrigo Velasco Alessandri - Alessandri
- Sebastian Alvarado - Silva
- Cristian Barros - Sargent & Krahn
- Juan Alberto Diaz Wiechers - Diaz Wiechers SA
- Fernando García - Carey
- Eugenio Gormáz - Albagli Zaliasnik SpA
- Allan Jarry - Jarry IP
- Rodrigo León - Silva
- Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
- Eduardo Molina V - Villaseca Abogados
- Santiago Ortúzar - Alessandri
- Marcela Ramírez - Johansson & Langlois
- Juan Francisco Reyes - SCR Abogados
- Francesca Rodríguez Spinelli - Alessandri
- Francisco Silva - Silva
- Jaime Silva Barros - Alessandri
- Loreto Vera C - Villaseca Abogados
- Sergio Amenábar V - Villaseca Abogados
- Marino Porzio - Porzio Rios Garcia